Chapter 13: Section 71 declaration as to non infringement

Introduction

13.01

This section provides for the making of a declaration that an act does not, or a proposed act would not, constitute an infringement of a granted patent.

13.02

Before an application can be made under section 71 the person seeking the declaration must-

(a) apply in writing to the proprietor for a written acknowledgement to the effect of the declaration claimed and must furnish him with full particulars in writing of the act in question and

(b) confirm that the proprietor has refused or failed to give any such acknowledgement.

13.03

If the proprietor refuses or does not give the acknowledgement sought, then an application for a declaration may be made to the Comptroller.

13.04

Where proceedings are pending in the court under any of sections 58, 61, 69, 70, 71 or 72, no proceedings may be instigated before the comptroller under section 71 without the leave of the court. However, court proceedings for infringement of a patent may be stayed pending the outcome of proceedings under sections 71 and 72 before the comptroller.

Formal requirements

13.05

Action by Litigation assistant A1

13.06

Statement of grounds

What should the statement of grounds contain?

13.07

13.08

The statement of grounds should also indicate that subparagraphs (a) and (b) of section 71(1) have been complied with.

13.09

It is not always easy to establish that the requirements of section 71(1)(a) have been complied with and this can often result in a delay with the case. It is important that the claimant gives precise and complete information in relation to the article, process, etc which is alleged not to infringe the patent. However, the provision is satisfied by providing a sample of the alleged noninfringing article providing that its inspection by competent persons will make clear all aspects of the device material to the question of infringement. Also a description to be read in conjunction with a detailed drawing will suffice.

PDAX:-Physical exhibits should be taken to Index and Scanning to be recorded on PDAX. The physical exhibit should be retained by the B2 until the proceedings have been finalised. It should then be returned to Index and Scanning for appropriate storage.

13.10

Although implicit in the application, the relief sought should be stated explicitly in the statement in order to assist the HO at a later date.

13.17

In a decision of the comptroller dated xxxxxxxx, the application under section 71 for a declaration of non-infringement filed on xxxxxxxx, was allowed.

13.18

If the application has not been properly launched:

In a decision of the comptroller dated xxxxxxxx the application under section 71 filed on xxxxxxxx was deemed not to have been properly launched.

13.19

If the application has been refused:

use REG ENT free text and type in a register entry as follows:

In a decision of the Comptroller dated xxxxxxxx, the application under section 71 filed on xxxxxxxx, was refused.

Clear records

13.20

As well as the actions listed in 1.47, if a sample of an alleged infringing article has been filed, place a minute on PDAX to show that the sample filed has been sent to Indexing and Scanning to arrange storage e.g. “Sample of .…… filed on ………….. sent to I&S to arrange storage on …………”. (For action on receipt of an alleged infringing article see 1.46)